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PART II
THE INTERNATIONAL APPLICATION
Chapter 4
Content of the International Application (Other Than the Claims)
General
Article 3(2)
4.01 The contents of the international application are set out in Article 3(2). The
application must contain:
(i)
a request (see the PCT Receiving Office Guidelines);
(ii)
a description (see paragraphs 4.02 to 4.27);
(iii)
one or more claims (see chapter 5);
(iv)
one or more drawings (where required; see paragraph 4.28); and
(v)
an abstract (see chapter 16).
This chapter discusses above items (ii) and (iv) insofar as they are the concern of the
International Searching Authority and International Preliminary Examining Authority.
Description
Article 5
4.02 The international application must “disclose the invention in a manner sufficiently
clear and complete for the invention to be carried out by a person skilled in the art.” The
meaning of “person skilled in the art” is discussed in paragraph 13.11. This requirement of
disclosure should be met by the description with the aid of drawings, if any. The provisions
relating to the content of the description are set out in Rule 5. The purposes of these
provisions are:
(i) to ensure that the international application contains all the technical information
required to enable a skilled person to put the invention into practice; and
(ii) to enable the reader to understand the contribution to the art which the inventor
has made.
Rule 5.1
4.03 The description should start with the same title that appears in the request
(Form PCT/RO/101). The description should contain subheadings corresponding to those
contained in Section 204 (“Technical Field”, “Background Art”, “Disclosure of Invention”,
“Brief Description of Drawings”, “Best Mode(s) for Carrying Out the Invention”, “Industrial
Applicability” and, where appropriate, “Sequence Listing” and “Sequence Listing Free
Text”). The use of such subheadings is strongly recommended in order to provide uniformity
in publication and to facilitate access to the information contained in the international
application. Some of the recommended subheadings are discussed in the following
paragraphs.
Technical Field
Rule 5.1(a)(i)
4.04
The application should specify the technical field to which it relates.
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Background Art
Rules 51(a)(ii), 6.3(b)(i)
4.05 The description should also mention any background art of which the applicant is
aware, and which can be regarded as useful for understanding the invention and its
relationship to the prior art; identification of documents reflecting such art, especially patent
specifications, should preferably be included. For further guidance concerning the statement
of prior art of references, see the appendix to this chapter. This applies in particular to the
background art corresponding to those technical features of the invention which are necessary
for the definition of the claimed subject matter but which, in combination, are part of the prior
art (see Rule 6.3(b)(i) and paragraph 5.05).
Disclosure of Invention
Rules 5.1(a)(iii), 9.1(iii)
4.06 The invention as claimed should be disclosed in such a way that the technical
problem, or problems, with which it deals can be appreciated and the solution can be
understood. To meet this requirement, only such details should be included as are necessary
for elucidating the invention. Where the invention lies in realizing what the problem is (see
chapter 13), this should be apparent, and, where the means of solving the problem (once
realized) are obvious, the details given of its solution may, in practice, be minimal.
4.07 When there is doubt, however, as to whether certain details are necessary, the
examiner should not require their excision. It is not necessary, moreover, that the invention
be presented explicitly in problem and solution form. Any advantageous effects which the
applicant considers the invention to have in relation to the prior art should be stated, but this
must not be done in such a way as to disparage any particular prior product or process. The
prior art nor the applicant’s invention cannot be referred to in a manner likely to mislead.
This might be done, for example, by an ambiguous presentation which gives the impression
that the prior art had solved less of the problem than was actually the case. Fair comment as
referred to in paragraph 4.30 is permitted. Regarding amendment to, or addition of, a
statement of problem, see paragraph 20.18.
Brief Description of Drawings
4.08 If drawings are included they should first be briefly described, in a manner such as:
“Figure 1 is a plan view of the transformer housing; Figure 2 is a side elevation of the
housing; Figure 3 is an end elevation looking in the direction of the arrow ‘X’ of Figure 2;
Figure 4 is a cross-section taken through AA of Figure 1.” When it is necessary to refer in the
description to elements of the drawings, the name of the element should be referred to as well
as its number, that is, the reference should not be in the form “3 is connected to 5 via 4” but
“resistor 3 is connected to capacitor 5 via switch 4.”
4.09 The description and drawings should be consistent with one another, especially in the
matter of reference numbers and other signs (see paragraph 4.28). However, where, as a
result of amendments to the description, whole passages are deleted, it may be tedious to
delete all superfluous references from the drawings and in such a case the examiner need not
pursue too rigorously the consistent use of reference signs as between the description and the
drawings. The reverse situation should not occur, that is, all reference numbers or signs used
in the description or claims should also appear on the drawings.
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Best Mode for Carrying Out the Invention
Rule 5.1(a)(v)
4.10 The international application should set forth at least the best mode contemplated by
the applicant for carrying out the invention claimed; this should be done in terms of
examples, where appropriate, and with reference to the drawings, if any. The applicant need
not point out which of their embodiments or examples they consider to be the best mode.
Determining compliance with the best mode requirement requires a two-prong inquiry. First,
it must be determined whether, at the time the application was filed, the applicant
contemplated a best mode for practicing the invention. This is a subjective inquiry which
focuses on the applicant’s state of mind at the time of filing. Second, if the inventor did, in
fact, contemplate a best mode, it must be determined whether the written description disclosed
the best mode such that a person skilled in the art could practice it. This is an objective
inquiry, focusing on the scope of the claimed invention and the level of skill in the art. The
examiner should assume that the best mode is disclosed in the application, unless evidence is
presented that is inconsistent with that assumption. It is therefore extremely rare that an
objection based upon a lack of best mode would be made in an international application.
There currently are diverging practices among the International Authorities and designated
States with respect to the requirement for the application to set forth the best mode. Where
the national law of a designated State does not require the description of the best mode but is
satisfied with the description of any mode (whether it is the best contemplated or not), failure
to describe the best mode contemplated has no effect in that State.
Structure and Function
4.11 In order that the requirements of Article 5 and of Rule 5.1(a)(iii) and (v) may be fully
satisfied, it is necessary that the invention be described not only in terms of its structure but
also in terms of its function, unless the functions of the various parts are immediately
apparent. Indeed, in some technical fields (for example, computers), a clear description of
function may be much more appropriate than an over-detailed description of structure.
Sufficiency
4.12 It is the responsibility of the applicant to ensure that he supplies, when he first files his
international application, a sufficient disclosure, that is, one that meets the requirements of
Article 5 in respect of the invention, as claimed in all of the claims (see paragraphs 5.43
to 5.53). If the disclosure is seriously insufficient, such a deficiency cannot be cured
subsequently by adding further examples or features without offending against
Article 34(2)(b) which requires that the subject matter content of the application must not go
beyond the disclosure in the international application (see paragraphs 20.03 and 20.10 et seq.).
Where the disclosure is insufficient to enable a person skilled in the art to carry out the
claimed invention, the claim may also be too broad to be supported by the description and
drawings. Therefore, in that case, there may be non-compliance with both the requirement
concerning sufficiency under this paragraph and the requirement of support of the claims (see
paragraphs 5.54 to 5.58).
4.13 Occasionally international applications are filed in which there is a fundamental
insufficiency in the invention in the sense that it cannot be carried out by a person skilled in
the art; there is then a failure to satisfy the requirements of Article 5 which is essentially
irreparable. Two instances thereof deserve special mention:
(a) The first is where the successful performance of the invention is dependent on
chance. That is to say, a person skilled in the art, in following the instructions for carrying
out the invention, finds either that the alleged results of the invention are not reproducible or
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that success in obtaining these results is achieved in a totally unreliable way. An example
where this may arise is a microbiological process involving mutations. Such a case should be
distinguished from one where repeated success is assured even though accompanied by a
proportion of failures as can arise, for example, in the manufacture of small magnetic cores or
electronic components; in this latter case, provided the satisfactory parts can be readily sorted
by a nondestructive testing procedure, no objection necessarily arises under Article 5.
(b) The second instance is where successful performance of the invention is
inherently impossible because it would be contrary to well-established physical laws. This
applies, for example, to a perpetual motion machine (see paragraph 14.06).
Industrial Applicability
Article 33(1) and (4); Rule 5.1(a)(vi)
4.14
Refer to chapter 14 for discussion of the industrial applicability of the invention.
Nucleotide and/or Amino Acid Sequence Listings
Rules 5.2, 13ter.1(a), (c) and (e); Sections 208, 801; AI Annex C
4.15 Where the international application contains disclosure of one or more nucleotide
and/or amino acid sequences, the description should contain a separate sequence listing part
complying with the standard provided for in Annex C of the Administrative Instructions. The
sequence listing may be in written form and computer readable form, both forms complying
with the standard provided for in Annex C. Instead of in written form, the sequence listing
may be filed on an electronic medium under the provisions of Section 801 of the
Administrative Instructions, where the receiving Office in which the international application
was filed accepts sequence listings filed on an electronic medium. The International
Searching Authority carries out the international search on the basis of those forms of the
listing. For handling of the nucleotide and/or amino acid sequence listings, refer to
paragraphs 15.11 and 15.12 (search stage) and paragraphs 18.17 to 18.18 (examination stage).
Deposit of Biological Material
Rule 13bis
4.16 The term “biological material” means any material containing genetic information and
capable of reproducing itself or of being reproduced in a biological system. Where the
application refers to biological material which cannot otherwise be described in the
application to meet the sufficiency of disclosure requirements of Article 5, the deposit of such
material is taken into consideration when determining whether those requirements have been
met.
4.17 The deposit is considered part of the description to the extent that the requirements
regarding sufficiency of disclosure under Article 5 cannot otherwise be complied with; thus
the deposit would be taken into account in determining compliance with such requirements.
Therefore, mere reference to the deposited material in an application may not be sufficient to
replace the explicit disclosure of such material in the application in order to comply with the
sufficiency of disclosure requirements. It should be noted, however, that a reference to the
deposit in the application would not create the presumption that the deposit is necessary or
required to comply with those requirements.
4.18 In accordance with paragraphs 4.16 and 4.17, a deposit of biological material is taken
into consideration in determining whether the sufficiency of disclosure requirements of
Article 5 has been met. Further, in some Authorities, a deposit of biological material is also
taken into consideration in determining whether the support requirement of Article 6 has been
met.
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References to Deposited Microorganisms or Other Biological Material as Part of the
Description
Rule 13bis.7
4.19 The national law of certain States requires that references to deposited
microorganisms or other biological material furnished under Rule 13bis.3(a) be included in
the description (PCT Applicant’s Guide, Volume I/B, Annex L). Where such a State is
designated and indications are presented on a separate sheet such as Form PCT/RO/134
(which may be prepared using the PCT-EASY software), that sheet should be numbered as a
sheet of the description, but this matter is not considered by the International Authority.
Requirements as to the Language of Sheets Containing References to Deposited
Microorganisms or Other Biological Material
Articles 11(1)(ii), 14(4); Rules 29.3, 30
4.20 Sheets containing references to deposited microorganisms or other biological material
must, if they are part of the description, be in the same language as that of the description.
This is a requirement for being accorded an international filing date (Article 11(1)(ii), see
paragraph 41 of the PCT Receiving Office Guidelines). If the International Searching
Authority discovers less than four months from the international filing date that, despite an
international filing date having been accorded, these sheets are not in the same language as
that of the description, it notifies the Receiving Office using Form PCT/ISA/209, indicating
that it considers that the receiving Office should make a finding that the international
application is to be considered withdrawn under Article 14(4). If the receiving Office does
not make such a finding within four months of the international filing date, the international
application cannot be so considered withdrawn and the deficiency is merely noted in the
written opinion (see paragraph 17.46). The applicant may then file an appropriate correction
or (if international preliminary examination is demanded) amendment.
General
Rule 5.1(b); Section 204
4.21 The manner and order of presentation of the various parts of the description should be
that specified in Rule 5.l(a) and Section 204 (see paragraph 4.03), unless, “because of the
nature of the invention, a different manner or a different order would result in a better
understanding and a more economic presentation.” Since the responsibility for a clear and
complete description of the invention lies with the applicant, the examiner should exercise his
discretion as to whether to object to the presentation. Some departure from the requirements
of Rule 5.l(a) is acceptable, provided the description is clear and orderly and all the requisite
information is present. For example, the requirements of Rule 5.l(a)(iii) (see paragraph 4.06)
may be waived where the invention is based on a fortuitous discovery, the practical
application of which is recognized as being useful, or where the invention breaks entirely new
ground. Also certain technically simple inventions may be fully comprehensible with the
minimum of description and but slight reference to prior art.
Rule 10.2
4.22 The description should be clear and straightforward with avoidance of unnecessary
technical jargon. In general, only such technical terms, signs and symbols should be used as
are generally accepted in the art. Little known or specially formulated technical terms may be
allowed, provided that they are adequately defined and that there is no generally recognized
equivalent. This discretion may be extended to foreign terms when there is no equivalent in
the language of the international application. Terms already having an established meaning
must not be used to mean something different as this is likely to cause confusion. There may
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be circumstances where a term may legitimately be borrowed from an analogous art.
Terminology and signs should be consistent throughout the international application.
4.23 In the particular case of inventions in the computer field, program listings in
programming languages cannot be relied on as the sole disclosure of the invention. The
description, as in other technical fields, should be written substantially in normal language,
possibly accompanied by flow diagrams or other aids to understanding, so that the invention
may be understood by those skilled in the art. Short excerpts from programs written in
commonly used programming languages can be accepted if they serve to illustrate an
embodiment of the invention.
Rule 10.1(a), (b), (d) and (e)
4.24 When the properties of a material are referred to, the relevant units should be specified
if quantitative considerations are involved. If this is done by reference to a published standard
(for example, a standard of sieve sizes), and such standard is referred to by a set of initials or
similar abbreviation, it should be adequately identified in the description. The metric system
of units of weight and measures should be used or, if another system is used, the units should
additionally be expressed in the metric system. Similarly, temperature should be expressed in
degrees Celsius or also expressed in degrees Celsius if first expressed in a different manner.
Other physical values (that is, other than those having units directly derivable from length,
mass, time and temperature) should be expressed in the units recognized in international
practice; for example, for electric units the MKSA (Meter, Kilogram, Second, Ampere) or SI
(Système International) systems should be used. Chemical and mathematical symbols, atomic
weights and molecular formulae should be those in general use, and technical terms, signs and
symbols should be those “generally accepted in the art.” In particular, if there are any agreed
international standards in the art in question, these should be adopted wherever practicable.
4.25 The use of proper names or similar words to refer to materials or articles is
undesirable insofar as such words merely denote origin or where they relate to a range of
different products. If such a word is used, then in order to satisfy the requirements of
Article 5, the product should normally be sufficiently identified, without reliance upon the
word, to enable the invention to be carried out by a person skilled in the art. However, where
such words have become internationally accepted as standard descriptive terms and have
acquired a precise meaning (for example, “Bowden” cable, “Bellville” washer), they may be
allowed without further identification of the product to which they relate.
4.26 References in international applications to other documents may relate either to the
background art or to a part of the disclosure of the invention. Where the reference relates to
the background art, it may be in the application as originally filed or introduced at a later date
(see paragraph 20.18). Where the reference relates directly to the disclosure of the invention
(for example, details of one of the components of a claimed apparatus) then, if it is to be taken
into account in respect of Article 5, it must be in the application as originally filed and clearly
identify the document referred to in such a manner that the document can be easily retrieved.
If matter in the document referred to is essential to satisfy the requirements of Article 5, this
matter should be incorporated into the description, because the patent specification should,
regarding the essential features of the invention, be self-contained, that is, capable of being
understood without reference to any other document.
4.27 A reference to an unpublished, previously filed application (that is, not published
before the international filing date) should not be regarded as being part of the disclosure,
unless the application referred to is made available to the public on or before the publication
date of the international application. The reference to such an application made available to
the public on or before the publication date of the international application may be replaced
by the actual text referred to and may be taken into account by the examiner. Similarly,
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references to textbooks and periodicals are allowable under the same conditions if it can be
proved that the content thereof was fixed prior to the international filing date. In the case of
any document made available to the public later than the publication date of the international
application or not to be published at all (for example, an application withdrawn before
publication), the examiner should not take into account the reference to that document for the
purposes of international preliminary examination. It should be noted, however, that this
practice relates only to the international phase and does not preclude any designated or elected
Office applying the relevant national law as far as it relates to the contents of the disclosure of
the international application as filed.
Drawings
Rule 11
4.28 The formal requirements relating to drawings are set down in Rules 11.10 to 11.13.
The only question likely to cause difficulty is whether the text matter included on the
drawings is absolutely indispensable. In the case of circuit diagrams, block schematics and
flow sheets, identifying catchwords for functional integers of complex system (for example,
“magnetic core store,” “speed integrator”) may be regarded as indispensable from a practical
point of view if they are necessary to enable a diagram to be interpreted rapidly and clearly.
However, such items can often be identified by a single numeral or letter which is then
explained in the description.
Expressions, Etc., Not to Be Used
Rule 9.1(i) and (ii)
4.29 There are four categories of expressions which should not be contained in an
international application. These categories are specified in Rule 9.1. Examples of the kind of
matter coming within the first and second categories (contrary to morality or public order
(“ordre public”)) are: incitement to riot or to acts of disorder; incitement to criminal acts;
racial, religious or similar discriminatory propaganda; and grossly obscene matter. The
purpose of Rule 9 is to prohibit the kind of matter likely to induce riot or public disorder, or
lead to criminal or other generally offensive behavior. This Rule is likely to be invoked by
the examiner only in rare cases.
Rule 9.1(iii)
4.30 It is necessary to discriminate in the third category (disparaging statements) between
libelous or similarly disparaging statements, which are not allowed, and fair comment, for
example, in relation to obvious or generally recognized disadvantages, or disadvantages stated
to have been found by the applicant, which, if relevant, is permitted.
Rule 9.1(iv)
4.31 The fourth category is irrelevant matter. It should be noted, however, that such matter
is specifically prohibited under the Rule only if it is “obviously irrelevant or unnecessary,” for
instance, if it has no bearing on the subject matter of the invention or its background of
relevant prior art (see also paragraph A4.05[2] in the appendix to this chapter). The matter to
be removed may already be obviously irrelevant or unnecessary in the original description. It
may, however, be matter which has become obviously irrelevant or unnecessary only in the
course of the examination proceedings, for example, owing to a limitation of the claims of the
patent to one of the originally several alternatives.
4.32 Generally, the receiving Office (see the PCT Receiving Office Guidelines) or the
International Searching Authority (see paragraph 15.31) will deal with matter falling under
Rule 9.1. If any such matter has not been recognized at one of these earlier stages, the
International Preliminary Examining Authority may also invite the applicant to remove such
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matter. The applicant should be informed of the category applied under which the prohibited
matter is to be removed.
Appendix to Chapter 4
Background Art
A4.05 The International Preliminary Examining Authorities have divergent practices
concerning whether it is appropriate to invite the applicant to introduce references to the prior
art into the international application. The guidelines below may be relied upon by the
Authorities as appropriate.
A4.05[1] The insertion into the statement of prior art of references to documents identified
subsequently, for example by the search report, may be appropriate, provided that the
amendment would not go beyond the disclosure in the international application as filed. For
instance, while the originally filed description of prior art may give the impression that the
inventor has developed the invention from a certain point, the cited documents may show that
certain stages in, or aspects of, these alleged developments were already known. The
examiner may invite the inclusion of a reference to these documents and a brief summary of
the relevant contents. Care should be taken that any such inclusion does not contravene
Article 34(2)(b) (see paragraphs 20.10 to 20.19).
A4.05[2] Since the reader is presumed to have the general background and technical
knowledge appropriate to the art, and it is not in any case permitted to make amendments
which go beyond the disclosure as filed, the examiner should not invite the applicant to insert
anything in the nature of a treatise or research report or explanatory matter which is
obtainable from textbooks or is otherwise well known. Likewise, the examiner should not
invite the applicant to provide a detailed description of the content of cited prior documents.
It is sufficient that the reason for the inclusion of the reference is indicated, unless, in a
particular case, a more detailed description is necessary for a full understanding of the
claimed invention. Lists of several reference documents relating to the same feature or aspect
of the prior art are not required; only the most appropriate ones need to be referred to. On the
other hand, the examiner should not invite the applicant to excise any such unnecessary
matter, except when it is very extensive.
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Chapter 5
Claims
General
Article 3(2)
5.01
The international application must contain “one or more claims.”
5.02
The claims must:
Article 6
(i)
“define the matter for which protection is sought;”
(ii)
“be clear and concise;” and
(iii)
“be fully supported by the description.”
5.03 This chapter sets out the appropriate form and content of the claims, together with
how they should be interpreted for the purposes of assessing the novelty and inventive step of
the inventions which they define, and searching for prior art which may be relevant to making
that determination.
Form and Content of Claims
Rule 6.3(a)
5.04 The claims must be drafted in terms of the “technical features of the invention.” This
means that claims should not contain any statements relating, for example, to commercial
advantages or other non-technical matters, but statements of purpose should be allowed if
they assist in defining the invention. It is not necessary that every feature should be expressed
in terms of a structural limitation. Since it is a matter for national law, the examiner should
normally not object to the inclusion of functional limitations in a claim provided that a person
skilled in the art would have no difficulty in providing some means of performing this
function without exercising inventive skill or that such means are fully disclosed in the
application concerned. A functional limitation must be evaluated and considered, just like
any other limitation of the claim, for what it fairly conveys to a person skilled in the art in the
context in which it is used. Claims to the use of the invention in the sense of the technical
application thereof are permissible. See paragraph 5.21.
Rule 6.3(b)(ii) and (c); Section 205
5.05 Rule 6.3(b) defines the two-part form which a claim should take “whenever
appropriate.” The first part should contain a statement indicating the designation of the
subject matter of the invention, that is, the general technical class of apparatus, process, etc.,
to which the claimed invention relates, followed by a statement of those technical features
“which are necessary for the definition of the claimed subject matter but which, in
combination, are part of the prior art.” It is clear from this wording that it is necessary only to
refer to those prior art features which are relevant to the invention. For example, if the
invention relates to a photographic camera but the claimed inventive step relates entirely to
the shutter, it would be sufficient for the first part of the claim to read: “A photographic
camera including a focal plane shutter having...” (here recite the known combination of
features which is utilized) and there is no need to refer also to the other known features of a
camera such as the lens and viewfinder. The second part or “characterizing portion” should
state the technical features which, in combination with the features stated under the first part
(Rule 6.3(b)(i)), it is desired to protect, that is, the features which the invention adds to the
prior art. If the search results, or any additional documents considered to be relevant in
accordance with Article 33(6), reveal that any feature in the second part of the claim was, in
fact, already known in combination with all the features in the first part of the claim and in
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that combination have the same effect as they have in the full combination according to the
claimed invention, the examiner may invite the applicant to transfer such feature or features to
the first part. Where, however, a claim relates to a novel combination, and where the division
of the features of the claim between the prior art part and the characterizing part could be
made in more than one way without inaccuracy and if the division of the features chosen by
the applicant is not incorrect, the examiner should take no action. If the examiner, in the first
written opinion, invites the applicant to adopt a different division but the applicant does not
follow the invitation, the examiner should not pursue the matter further since the manner of
claiming is a matter for national laws of designated or elected States.
5.06 The applicant may be invited to follow the above two-part formulation where, for
example, it is clear that the applicant’s invention resides in a distinct improvement in an old
combination of parts or steps. However, as is indicated by Rule 6, this form need only be
used in appropriate cases. The nature of the invention may be such that this form of claim is
unsuitable, for example, because it would give a distorted or misleading picture of the
invention or the prior art. Examples of the kind of invention which may require a different
presentation are:
(i) the combination of known elements or steps of equal status, the inventive step
lying solely in the combination;
(ii) the modification of, as distinct from addition to, a known chemical process, for
example, by omitting one substance or substituting one substance for another; and
(iii) a complex system of functionally interrelated parts, the inventive step concerning
changes in several of these parts or in their interrelationships.
5.07 In examples (i) and (ii), the two-part form of claim according to Rule 6.3(b) may be
artificial and inappropriate, whereas, in example (iii), it might lead to an inordinately lengthy
and involved claim. Another example in which the two-part form of claim provided for in
Rule 6.3(b) may sometimes be inappropriate is where the claimed invention is a new chemical
compound or group of compounds that does not fall within a known class. It is also likely
that other cases will arise in which it will be appropriate to formulate the claim in a different
form.
5.08 When determining whether or not to invite the applicant to put a claim in the two-part
form provided by Rule 6.3(b), it is important to assess whether this form is “appropriate.” In
this respect, it should be borne in mind that the purpose of the two-part form of claim is to
allow the reader to see clearly which features necessary for the definition of the claimed
subject matter are, in combination, part of the prior art. If this is sufficiently clear from the
indication of prior art provided in the description, to meet the requirement of Rule 5.1(a)(ii), it
is appropriate to present the claim in a form other than the two-part form provided by
Rule 6.3(b).
Rule 11.10(a), (b) and (c)
5.09 The claim, as well as the description, “may contain chemical or mathematical
formulae” but not drawings. “Any claim may contain tables” but “only if the subject matter
of the claim makes the use of tables desirable.” In view of the use of the word “desirable,”
the examiner should not object to the use of tables in claims where this form is convenient.
Rule 6.2(a)
5.10 The claims must not, in respect of the technical features of the invention, rely on
references to the description or drawings “except where absolutely necessary.” In particular,
they must not normally rely on references such as: “as described in part ... of the description”
or “as illustrated in Figure 2 of the drawings.” The emphatic wording of the excepting clause
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should be noted. Thus, the applicant should be invited to show that it is “absolutely
necessary” to rely on reference to the description or drawings in appropriate cases. An
example of an exception would be that in which the invention as claimed involved some
peculiar shape illustrated in the drawings but which could not be readily defined either in
words or by a simple mathematical formula. Another special case is that in which the
invention relates to chemical products whose features can be defined only by means of graphs
or diagrams.
Rule 6.2(b)
5.11 If there are drawings and the technical features of the claims would be rendered more
intelligible by relating those features to the corresponding features of the drawings, this
should preferably be done by placing the appropriate reference signs in parentheses after the
features in the claims. This should be done in both parts of claims having the preferred form
specified in Rule 6.3(b). These reference signs are not, however, to be construed as limiting
the scope of a claim, but merely as aids to an easier understanding of the defined subject
matter.
Kinds of Claim
Categories
Rule 13; Section 206; AI Annex B
5.12 There are two basic kinds of claim, viz., claims to a physical entity (product,
apparatus) and claims to an activity (process, use). The first basic kind of claim (“product
claim”) includes a substance or composition (for example, chemical compound or a mixture
of compounds) as well as any physical entity (for example, object, article, apparatus, machine,
or system of cooperating apparatus) which is produced by a person’s technical skill.
Examples are “steering mechanism incorporating an automatic feedback circuit...;” “a woven
garment comprising ...;” “an insecticide consisting of X, Y, Z;” or “a communications system
comprising a plurality of transmitting and receiving stations.” The second basic kind of claim
(“process claim”) is applicable to all kinds of activities in which the use of some material
product for effecting the process is implied; the activity may be exercised upon material
products, upon energy, upon other processes (as in control processes) or upon living things
(see, however, paragraphs 9.04 to 9.15 which relate to subjects that may be excluded from
international search or preliminary examination).
5.13 It should be noted that claims which are worded differently may, in reality, fall within
the same category and have effectively the same scope. For example, a claim referring to a
“system” and a claim referring to “apparatus” may both be in the “apparatus” category. It
should be further noted that it is permitted to include in the same international application
claims of the said different categories provided that they comply with the requirement of
Rule 13.1 (see chapter 10). The examiner should bear in mind that the presence of such
different claims may assist an applicant in later obtaining full protection for the invention in
all the designated/elected States since infringement of a patent is dealt with by national law.
Consequently, while the examiner should draw attention to an unnecessary proliferation of
independent claims (see paragraph 5.42), he should not adopt an over-academic or rigid
approach to the presence of a number of claims which are differently worded but apparently
of similar effect.
5.14 Rule 13.3 states that “the determination whether a group of inventions is so linked as
to form a single general inventive concept shall be made without regard to whether the
inventions are claimed in separate claims or as alternatives within a single claim.” This
means that while the examiner should take exception to an unnecessary proliferation of
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independent claims, the examiner should not take exception to two or more independent
claims in the same category, provided that there is a unifying inventive concept and that the
claims as a whole satisfy the requirement of Article 6 that they should be “concise” (see
paragraph 5.42). In applying this principle, the examiner should have regard to the remarks
made in paragraph 5.13 concerning claims of apparently similar scope. However there are
other circumstances where it may not be appropriate to cover the subject matter of an
invention by a single independent claim in a particular category, for example, (1) where the
invention relates to an improvement in two separate but interrelated articles which may be
sold separately, such as an electric plug and socket or transmitter and receiver, (2) where an
invention is concerned with electrical bridge-rectifier circuits, it might be necessary to include
separate independent claims to a single-phase and to poly-phase arrangements incorporating
such circuits since the number of circuits needed per phase is different in the two
arrangements, (3) where the invention resides in a group of new chemical compounds and
there are a number of processes for the manufacture of such compounds.
Independent and Dependent Claims
Rule 13.4
5.15 All international applications will contain one or more independent main claims
directed to the essential features of the invention. Any such claim may be followed by one or
more claims concerning specific forms of that invention. It is evident that any claim relating
to a specific form must effectively include also the essential features of the invention, and
hence must include all the features of at least one independent claim. The specific forms
should be construed broadly as meaning any more specific definition or specifically different
embodiments of the invention than that set out in the main claim or claims. It should be noted
that, subject to Rule 13.1, it is permitted to include a reasonable number of dependent claims
claiming specific forms of the claimed invention in the independent claim, even where the
features of any dependent claim could be considered as constituting in themselves an
invention.
Rules 6.4(a) and (b), 66.2(a)
5.16 Any dependent claim must include a reference to the claim from which it depends,
and must be construed as including all the limitations contained in the claim to which it refers.
A multiple dependent claim includes all the limitations contained in the particular claim in
relation to which it is considered. See the appendix to this chapter and paragraph 9.41 for
further guidance with respect to multiple dependent claims.
Rule 6.4(c)
5.17 All dependent claims, however referred back, should be grouped together to the extent
and in the most practical way possible. The arrangement must therefore be one which enables
the association of related claims to be readily determined and their meaning in association to
be readily construed. The examiner should invite the applicant to submit a suitable
amendment if the arrangement of claims is such that it creates obscurity in the definition of
the subject matter to be protected.
5.18 A claim, whether independent or dependent, can contain alternatives, provided those
alternatives are of a similar nature and can fairly be substituted one for another, and provided
also that the number and presentation of alternatives in a single claim does not make the claim
obscure or difficult to construe (see also paragraphs 10.09 and 10.17).
5.19 A claim may also contain a reference to another claim even if it is not a dependent
claim as defined in Rule 6.4. One example of this is a claim referring to a claim of a different
category (for example, “Apparatus for carrying out the process of Claim 1 ...,” or “Process for
the manufacture of the product of Claim 1 ...”). Similarly, in a situation like a plug and socket
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example, a claim to the one part referring to the other cooperating part, for example, “plug for
cooperation with the socket of Claim 1 ...,” is not a dependent claim as it does not expressly
contain the limitations of the earlier claim from which it depends, rather it only has a
functional relationship to that earlier claim.
Interpretation of Claims
Article 6
5.20 Claims should be interpreted the same way for both search and examination purposes.
Each claim should be read giving the words the ordinary meaning and scope which would be
attributed to them by a person skilled in the relevant art, unless in particular cases the
description gives the words a special meaning, by explicit definition or otherwise. See the
appendix to this chapter for further guidance with regard to the interpretation of claims.
“Use” Claims
5.21 A claim to a substance or composition for a particular use should generally be
construed as meaning a substance or composition which is in fact suitable for the stated use; a
known product which prima facie is the same as the substance or composition defined in the
claim, but which is in a form which would render it unsuitable for the stated use, would not
deprive the claim of novelty, but if the known product is in a form in which it is in fact
suitable for the stated use, though it has never been described for that use, it would deprive the
claim of novelty. For example, a claim to a known substance or composition for the first use
in surgical, therapeutic and/or diagnostic methods that is presented in a form such as:
“substance or composition X” followed by the indication of the use, for instance “... for use as
a medicament”, “... as an antibacterial agent” or “... for curing disease Y” will be regarded as
restricted to the substance or composition when presented or packaged for the use. See also
paragraph 5.22. See the appendix to this chapter for further guidance with respect to use
claims, and for an explanation of when an Authority may regard a “use” claim as equivalent
to a “process” claim.
Preamble
5.22 The effect of the preamble on the evaluation of the elements of a claim for search and
examination purposes should be determined on a case by case basis in light of the facts in
each case. During search and examination, statements in the preamble reciting the purpose or
intended use of the claimed invention must be evaluated to determine whether the recited
purpose or intended use results in a structural difference (or, in the case of process claims, a
difference in process steps) between the claimed invention and the prior art. If so, the
recitation serves to limit the claim. In two-part claims as defined in Rule 6.3(b), the preamble
is regarded as a limitation on the scope of the claim.
5.23 If a claim commences with such words as “Apparatus for carrying out the process,
etc., ...” this must be construed as meaning merely apparatus suitable for carrying out the
process. An apparatus which otherwise possesses all of the features specified in the claim, but
which would be unsuitable for the stated purpose or which would require modification to
enable it to be so used, should not normally be considered as coming within the scope of the
claim. For example, a claim recites a machine for cutting meat comprising apparatus
limitations. The claim language “machine for cutting meat” sets forth only the function of the
apparatus (that is, for cutting meat) without any positive structural limitations. Such language
would not be given any weight in assessing novelty and inventive step as long as the prior art
cutting machine was capable of cutting meat. In this case, one should treat the words “for
cutting meat” merely as limitation to a machine adapted to cut meat. Thus, one would look to
the prior art to see whether the cutting machine would be inherently capable of cutting the
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meat, whether or not the prior art description specified what material is cut by the machine.
Similar considerations apply to a claim for a product for a particular use. For example, if a
claim refers to “mold for molten steel,” this implies certain limitations for the mold.
Therefore, a plastic ice cube tray with a melting point much lower than that of steel would not
come within the claim. Similarly, a claim to a substance or composition for a particular use
should be construed as meaning a substance or composition which is in fact suitable for the
stated use; a known product which is per se the same as the substance or composition defined
in the claim, but which is in a form which would render it unsuitable for the stated use, would
not deprive the claim of novelty.
Open and Closed Claims
5.24 In evaluating novelty or inventive step, the examiner should consider which type of
the transition phrase, such as “consisting of,” “comprising,” “characterized by,” or “consisting
essentially of” is used in the claims. The subject matter to be searched depends on the type of
transition phrase used.
(a) Where a claim is drafted using a “closed” type of transition phrase, the claim
cannot be construed as including products or processes that include structural elements or
process steps other than those set forth in the claim. For example, if a claim recites “a product
consisting only of A, B and C,” it cannot be construed as including, and is novel over, prior
art that discloses a product having A, B, C and D, or any other additional feature or elements.
The phrase “consisting of” may be interpreted by some Authorities as a “closed” type of
transition phrase, however, other Authorities treat such language as equivalent to “consisting
essentially of” as noted in (c) below.
(b) Where a claim is drafted using an “open” type of transition phrase, it can be
construed as including products or processes that include non-recited components or process
steps, respectively. For example, if a claim recites “a product comprising A, B and C,” it can
be construed as including, and lacks novelty over, prior art that discloses a product having A,
B, C and D, as well as any additional feature or element.
(c) Where a claim is drafted using “consisting essentially of” as the transition phrase,
the claim occupies a middle ground between closed claims that are written in a closed format
and fully open claims. The transitional phrase “consisting essentially of” limits the scope of a
claim to the specified materials or steps “and those that do not materially affect the basic and
novel characteristic(s)” of the claimed invention. For the purposes of search and examination,
absent a clear indication in the description or claims of what the basic and novel
characteristics actually are, “consisting essentially of” will be construed as equivalent to open
(for example, “comprising”) language.
Means Plus Function Claims
5.25 Where a limitation in the claim defines a means or a step in terms of its function or
characteristics without specifying the structure or material or act in support thereof, such a
limitation should be construed as defining any structure or material or act which is capable of
performing the defined function or which has the defined characteristics, unless the means are
further specified in the claim. If the means are further specified, the claim would be
interpreted to include those further specified limitations. For example, if a claim recites valve
means for restricting the flow of fluid, it would be interpreted by the examiner to include the
further specified limitation of a valve means rather than any means for restricting flow of
fluid. As another example, a claim aimed at “a building material incorporating a layer which
insulates heat” should be interpreted as a building material incorporating any “product” that is
“a layer which insulates heat.” It should be noted, however, that the issues of whether such
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means-plus-function claims are clear and concise or not and whether the disclosure of the
claimed invention is sufficient for a person skilled in the art or not should be determined
separately.
Product by Process Claims
5.26 Where a claim defines a product in terms of the process by which the product is made,
the claim as a whole is directed to a product. Such a claim lacks novelty if a prior art product,
even if made by an undisclosed process, appears to be inherently the same as, or
indistinguishable from, the claimed invention. See the appendix to this chapter for more
guidance with respect to product by process claims.
5.27 Where a product can only be defined by the process steps by which the product is
made, or where the manufacturing process would be expected to impart distinctive
characteristics on the final product, the examiner would consider the process steps in
determining the subject of the search and assessing patentability over the prior art. For
example, a claim recites “a two-layer structured panel which is made by welding together an
iron sub-panel and a nickel sub-panel.” In this case, the process of “welding” would be
considered by the examiner in determining the subject of the search and in assessing
patentability over the prior art since the process of welding produces physical properties in the
end product which are different from those produced by processes other than welding; that is,
the product can only be defined by the process step. Novelty of the claim is not brought into
question unless an identical two-layer structural panel made by means of welding is
discovered in the prior art.
Product and Apparatus Limitations in Process Claims
5.28 Product and apparatus limitations that appear in process claims must be taken into
account for search and examination purposes. See paragraph 5.22 for the effect of the
preamble on claim interpretation.
Inconsistency Between Claims and Description
5.29 Where there is any serious inconsistency between claims and description, amendments
to remove this should be invited from the applicant. For example, the description may state,
or may imply, that a certain technical feature not mentioned in the claims is essential to the
performance of the invention. In such a case, the examiner should invite amendment of the
claims to include this feature. However, if the applicant can show convincingly by way of
response that it would be clear to a person skilled in the art that the description was incorrect
in suggesting that the feature in question was essential, amendment of the description should
be invited instead. Another form of inconsistency is that in which the description and
drawings include one or more embodiments of the invention which appear to fall outside the
subject matter covered by the claims (for example, the claims all specify an electric circuit
employing electronic tubes and one of the embodiments employs semiconductors as an
alternative). Here again the applicant should be invited to amend the claim or the description
and drawings to remove the inconsistency and thus avoid any possible uncertainty which
could arise later as to the meaning of the claims. However, inconsistencies which do not
cause doubt as to the meaning of the claims may be overlooked.
5.30 General statements in the description which imply that the extent of protection may be
expanded in some vague and not precisely defined way should be objected to as not
complying with Article 6. In particular, objection should be raised to any statement which
refers to the extent of protection being expanded to cover the “spirit” of the invention. Where
the claims are directed to a combination of features only, any statement in the description
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which seems to imply that protection is nevertheless sought not only for the combination as a
whole but also for individual features or sub-combinations thereof should be objected to.
Clarity
Article 6
5.31 The requirement that the claims should be clear applies to individual claims and also
to the claims as a whole. The clarity of the claims is of the utmost importance for the
purposes of formulating an opinion on the questions of whether the claimed invention appears
to be novel, to involve an inventive step and to be industrially applicable in view of their
function in defining the matter for which protection is sought. Therefore the meaning of the
terms of a claim should, as far as possible, be clear for the person skilled in the art from the
wording of the claim alone (see also paragraph 5.20).
5.32 Each claim must set forth the scope of the invention sought to be protected with a
reasonable degree of clarity. Clarity of claim language must be analyzed in light of the
content of the particular application disclosure, the teachings of the prior art, and the claim
interpretation that would be given by the person skilled in the art at the time the invention was
made. If a person skilled in the art can determine the boundaries of the claimed invention
with a reasonable degree of certainty, the claim complies with the requirement for clarity.
Breadth of a claim is not to be equated with lack of clarity. If the scope of the subject matter
embraced by the claims is clear, and if the applicant has not otherwise indicated that he
intends the invention to be of a scope different from that defined in the claims, then the claims
comply with the requirement for clarity.
5.33 An independent claim should clearly specify all of the essential features needed to
define the invention except insofar as such features are implied by the generic terms used, for
example, a claim to a “bicycle” does not need to mention the presence of wheels. If a claim is
to a process for producing the product of the invention, then the process as claimed should be
one which, when carried out in a manner which would seem reasonable to a person skilled in
the art, necessarily has as its end result that particular product; otherwise, there is an internal
inconsistency and therefore lack of clarity in the claim. In the case of a product claim, if the
product is of a well-known kind and the invention lies in modifying it in a certain respect, it is
sufficient if the claim clearly identifies the product and specifies what is modified and in what
way. Similar considerations apply to claims for an apparatus.
Clarity of Relative Terms
5.34 A claim that includes vague or equivocal forms of wording which leave the reader in
doubt as to the scope of a feature should be objected to for lack of clarity. A claim should not
use a relative or similar term such as “thin”, “wide” or “strong” unless the term has a wellrecognized meaning in the particular art, for example “high-frequency” in relation to an
amplifier, and this is the meaning intended. If a term of degree appears in a claim, the
examiner should determine whether one skilled in the art would be apprised of the meaning of
the term either by a disclosure of a standard for measuring that degree in the description or in
view of the prior art and state of the art. It may be appropriate to invite the applicant to either
define or excise the term if he could do so without extending the subject matter beyond the
content of the application as filed in contravention of Article 19(2) or 34(2)(b). An applicant
cannot rely on an unclear term to distinguish the claimed invention from the prior art.
5.35 The area defined by the claims must be as precise as the invention allows. As a
general rule, claims which attempt to define the invention, or a feature thereof, by a result to
be achieved should be objected to as lacking clarity. Objection may also be raised under lack
of support where the claimed scope is broader than what the description enables. However,
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no objection should be raised if the invention can only be defined in such terms and if the
result is one which can be achieved without undue experimentation (see paragraph 5.46), for
example, directly and positively verified by tests or procedures adequately specified in the
description and involving nothing more than trial and error. For example, the invention may
relate to an ashtray in which a smouldering cigarette end will be automatically extinguished
due to the shape and relative dimensions of the ashtray. The latter may vary considerably in a
manner difficult to define whilst still providing the desired effect. So long as the claim
specifies the construction and shape of the ashtray as clearly as possible, it may define the
relative dimensions by reference to the result to be achieved without being objected to for lack
of clarity, provided that the description includes adequate directions to enable the reader to
determine the required dimensions by routine test procedures.
5.36 Where the invention relates to a product, it may be defined in a claim in various ways,
viz., by a chemical formula, as a product of a process or by its parameters. Definition of a
product solely by its parameters may be appropriate in those cases where the invention cannot
be adequately defined in any other way, provided that those parameters can be clearly and
reliably determined either by indications in the description or by objective procedures which
are recognized in the art. The same applies to a process related feature which is defined by
parameters. This can arise, for example, in the case of macromolecular chains. Cases in
which non-art recognized parameters are employed, or a non-accessible apparatus for
measuring the parameter(s) is used, may be objectionable on grounds of lack of clarity. The
examiner should be aware of the possibility that applicants may attempt to employ unusual
parameters to disguise lack of novelty (see paragraph 12.04).
5.37 Where a claim for an apparatus or a product seeks to define the invention by reference
to features of the use to which the apparatus or product is to be put, a lack of clarity can result.
This is particularly the case where the claim not only defines the product itself but also
specifies its relationship to a second product which is not part of the claimed invention (for
example, a cylinder head for an engine, where the former is defined by features of where it is
connected in the latter). Such a claim must either set forth a clear definition of the individual
product being claimed by wording the claims appropriately (for example, by substituting
“connectable” for “connected”), or be directed to a combination of the first and second
products (for example, “engine with a cylinder head” or “engine comprising a cylinder
head”). It may also be permissible to define the dimensions and/or shape of a first product in
an independent claim by general reference to the dimensions and/or corresponding shape of a
second product that is not part of the claimed first product but is related to it through use (for
example, in the case of a mounting bracket for a vehicle number-plate, where the bracket
frame and fixing elements are defined in relation to the outer shape of the number-plate).
5.38 Particular attention is required whenever the word “about” or similar terms, such as
“approximately,” are used. Such a word may be applied, for example, to a particular value
(for example, “about 200°C”) or to a range (for example, “about X to about Y”). In each
case, the examiner should exercise judgment as to whether the meaning is sufficiently clear in
the context of the application read as a whole. Moreover, if such words as “about” prevent
the invention from being unambiguously distinguished from the prior art, an objection should
be raised as to lack of novelty or inventive step.
Clarity of Other Terms
5.39 Trademarks and similar expressions characterize the commercial origin of goods,
rather than the properties of the goods (which may change from time to time) relevant to the
invention. Therefore the examiner should invite the applicant to remove trademarks and
similar expressions in claims, unless their use is unavoidable; they may be allowed
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exceptionally if they are generally recognized as having a precise meaning (see also
paragraph 5.34).
5.40 Expressions like “preferably,” “for example,” “such as” or “more particularly” should
be looked at carefully to ensure that they do not introduce ambiguity. The examiner should
regard expressions of this kind as having no limiting effect on the scope of a claim; that is to
say, the feature following any such expression should be regarded as entirely optional.
5.41 Generally, the subject matter of a claim is defined by means of positive features.
However, the extent of a claim may be limited by means of a “disclaimer,” a “negative
limitation,” or an “exclusion;” in other words, an element clearly defined by technical features
may be expressly excluded from the protection claimed, for example in order to meet the
requirement of novelty. A claim may also include a negative limitation or language that
defines subject matter that is not present in the claimed invention (for example, “wherein the
composition is free of water”). There is nothing per se ambiguous or uncertain about a
negative limitation. A negative limitation renders the claim unclear where it is an attempt to
claim the invention by excluding what the applicant did not invent rather than clearly and
concisely reciting what he did invent. A claim which recites the limitation “said
homopolymer being free from the proteins, soaps, resins, and sugars present in natural Hevea
rubber” in order to exclude the characteristics of the prior art product, is considered to be clear
where each recited limitation is clear. In addition, the negative limitation “incapable of
forming a dye with said oxidized developing agent” is clear because the boundaries of the
patent protection sought are clear. If alternative elements are positively recited in the
description, they may be explicitly excluded in the claims. The mere absence of a positive
recitation is not basis for exclusion.
Conciseness, Number of Claims
Rule 6.1(a)
5.42 The requirement that the claims should be concise refers to the claims in their entirety
as well as to the individual claims. For example, undue repetition of words or an undue
multiplicity of claims of a trivial nature could be considered as not complying with this
requirement. See the appendix to this chapter for further guidance relating to determinations
of “conciseness” of claims.
Support in Description
Article 6
5.43 The claims “shall be fully supported by the description.” This means that there must
be a basis in the description for the subject matter of every claim and that the scope of the
claims must not be broader than is justified by the description and drawings.
5.44 As a general rule, a claim is regarded as supported by the description unless,
exceptionally, there are well-founded reasons for believing that the person skilled in the art
would be unable, on the basis of the information given in the application as filed, to extend
the particular teaching of the description to the whole of the field claimed by using routine
methods of experimentation or analysis. Support must, however, relate to the features of the
claimed invention; vague statements or assertions having no technical or other relevant
content provide no basis. The examiner should raise an objection of lack of support only if
there are well-founded reasons. Where an objection is raised, the reasons, where possible,
should be supported specifically by a published document.
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Clear and Complete Disclosure of Claimed Invention
Article 5
5.45 The subject matter of each claim must be supported by the description and drawings
“in a manner sufficiently clear and complete for the invention to be carried out by a person
skilled in the art.” The disclosure of the claimed invention is considered sufficiently clear and
complete if it provides information which is sufficient to allow the invention to be carried out
by a person skilled in the art as of the international filing date, without undue
experimentation.
5.46 The disclosure is aimed at a person skilled in the art (see paragraph 13.11). This
person is considered, if necessary, to use the general knowledge which would be possessed by
such a person to supplement the information contained in the application. The disclosure
must be sufficient to carry out the invention on the basis of the knowledge of a person skilled
in the art at the time of the international filing date, not at the time of the search and
examination. Although a reasonable amount of trial and error is permissible, a person skilled
in the art must, on the basis of the disclosure of the claimed invention and the general
knowledge, be able to carry out the invention without “undue experimentation.” This is
applicable particularly in the field of unexplored technologies.
5.47 Factors to be considered in determining whether undue experimentation is needed to
carry out the claimed invention include:
(i)
the breadth of the claims;
(ii)
the nature of the invention;
(iii)
the general knowledge of a person skilled in the art;
(iv)
the level of predictability in the art;
(v)
art; and
the amount of direction provided in the application, including references to prior
(vi) the amount of experimentation required to carry out the claimed invention on the
basis of the disclosure.
5.48 The breadth of the claims is relevant to the determination of undue experimentation,
since a person skilled in the art must be able to carry out the entire scope of the claimed
invention. For example, the applicant is not entitled to claim everything within the scope of
the invention, if the application only discloses how to carry out part of the claimed invention.
However, even in unpredictable arts, it is not necessary to provide examples covering every
possible variation within the scope of a claim. Representative examples together with an
explanation of how these can be applied to the scope of the claim as a whole will ordinarily be
sufficient if a person skilled in the art could carry out the claimed invention without undue
experimentation.
5.49 The subject matter to which the claimed invention pertains, is essential to determine
the general knowledge of a person skilled in the art and the state of the art. For example, if
the selection of the values for various parameters is a matter of routine for a person skilled in
the art, such a selection may not be considered as requiring undue experimentation.
5.50 “The amount of direction provided in the application” refers to the information
explicitly or implicitly contained in the description, claims and drawings, including working
examples and references to other applications or documents. The more that is known in the
prior art by a person skilled in the art about the nature of the invention and the more the art is
predictable, the less information in the application itself is needed in order to carry out the
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claimed invention. For example, there is predictability in the art if a person skilled in the art
can readily anticipate the effect of a feature of the claimed invention.
5.51 In addition to the time and expenses needed for carrying out the experimentation, the
character of the experimentation, for example, whether it constitutes merely routine work or
goes beyond such routine, should also be considered.
Sufficiency Commensurate with the Claims
5.52 Most claims are generalizations from one or more particular examples. The extent of
generalization permissible is a matter which the examiner must judge in each particular case
in the light of the relevant prior art. An appropriate claim is one which is not so broad that it
goes beyond the invention nor yet so narrow as to deprive the applicant of a just reward for
the disclosure of the invention. Obvious modifications and uses of and equivalents to that
which the applicant has described should not be questioned. In particular, if it is reasonable to
predict that all the variants covered by the claims have the properties or uses the applicant
ascribes to them in the description, it is proper for the applicant to draft the claims
accordingly.
5.53 A claim in generic form, that is, relating to a whole class, for example, of materials or
machines, may be acceptable even if of broad scope, if there is fair support in the description
and there is no reason to suppose that the invention cannot be carried out through the whole of
the field claimed. Where the information given appears insufficient to enable a person skilled
in the art to extend the teaching of the description to parts of the field claimed but not
explicitly described by using routine methods of experimentation or analysis, the examiner
should invite the applicant to establish, by suitable response, that the invention can in fact be
readily applied on the basis of the information given over the whole field claimed or, failing
this, to restrict the claim to accord with the description. An example of this might be a claim
to a specified method of treating “synthetic resin moulding” to obtain certain changes in
physical characteristics. If all of the examples described related to thermoplastic resins, and
the method was such as to appear inappropriate to thermosetting resins, then limitation of the
claims to thermoplastic resins might be necessary to comply with the sufficiency requirement.
Relationship of Claims to Disclosure
5.54 The claimed invention must be fully supported by the description and drawings,
thereby showing that the applicant only claims subject matter which he had recognized and
described on the international filing date.
5.55 The claims are not consistent and not commensurate with the description and
drawings if, after reading the application, the claimed invention is still not at the disposal of a
person skilled in the art, because an essential element for the function or operation of the
invention is missing from the claim. For example, consider a claim that relates to improved
fuel oil compositions which have a given desired property. The description provides support
for one way of obtaining fuel oils having this property, which is by the presence of defined
amounts of a certain additive. No other ways of obtaining fuel oils having the desired
property are disclosed. If the claim makes no mention of the additive, the claim is not fully
supported by the description. Another example would consist in the claim not being
consistent with the disclosure, for instance, due to contradictions between the elements
contained in the claims and the description. One other example would be that, having regard
to the description and the drawings, the scope of the claims covers an area which was not
recognized by the applicant, for example, mere speculation of possibilities that have not been
explored yet.
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5.56 A claim may broadly define a feature in terms of its function, even where only one
example of the feature has been given in the description, if the person skilled in the art would
appreciate other means that could be used for the same function. For example, “terminal
position detecting means” in a claim might be supported by a single example comprising a
limit switch, it being apparent to the person skilled in the art that, for example, a photoelectric
cell or a strain gauge could be used instead. In general, however, if the entire contents of the
application are such as to convey the impression that a function is to be carried out in a
particular way, with no intimation that alternative means are envisaged, and a claim is
formulated in such a way as to embrace other means, or all means, of performing the function,
then the claim does not comply with the support requirement. Furthermore, it may not be
sufficient if the description merely states in vague terms that other means may be adopted, if it
is not reasonably clear what they might be or how they might be used.
5.57 Characterization of a chemical compound solely by its parameters may be appropriate
in certain cases (see paragraph 5.36). Characterization of a chemical compound by its
parameters is fully supported by the description only when the invention is described by
sufficient relevant identifying characteristics which provide evidence that the applicant
recognized and described the claimed invention at the time of filing, such as by a description
of partial structure, physical and/or chemical properties, functional characteristics when
coupled with a known or disclosed correlation between structure and function, or a
combination of these characteristics.
5.58 Compliance with the sufficiency requirement of Article 5 and the requirement for
support for the claims in the disclosure of Article 6 are determined independently. In some
cases, where the claim is too broad to be supported by the description and drawings, the
disclosure may also be insufficient to enable a person skilled in the art to carry out the
claimed invention. Thus there may be non-compliance with both the requirement concerning
the relationship of the claims to the disclosure and the sufficiency requirement. See
paragraph 4.12.
Appendix to Chapter 5
Multiple Dependent Claims
A5.16 The International Searching and Preliminary Examining Authorities have divergent
practices with regard to the treatment of multiple dependent claims. Either of the alternative
guidelines below may be relied upon by an International Authority as appropriate.
A5.16[1] A dependent claim which refers to more than one other claim should refer to them
only alternatively. Multiple dependent claims cannot form a basis for other multiple
dependent claims.
A5.16[2] A dependent claim which refers to more than one other claim may refer to them
either alternatively or cumulatively. Multiple dependent claims may form a basis for other
multiple dependent claims.
Interpretation of Claims
A5.20 The International Searching and Preliminary Examining Authorities have divergent
practices with regard to whether the description can provide special definitions of terms that
are used in the claims. Either of the alternative guidelines below may be relied upon by an
International Authority as appropriate.
A5.20[1] Where the description provides a special meaning by way of, for example,
defining a term appearing in the claim, that definition should be used for the interpretation of
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the claim. The claims should not be limited in their meaning by what is explicitly disclosed in
the description and drawings. The claims should not be limited by the scope of the examples
of the claimed invention contained in the description. Further, if the wording of the claims
needs interpretation, the description and the drawings, and the general knowledge of a person
skilled in the art on the filing date are taken into account.
A5.20[2] If the description gives the words in a claim a special meaning, the examiner
should, so far as possible, require the claim to be amended whereby the meaning is clear from
the wording of the claim alone. The claim should also be read with an attempt to make
technical sense out of it. Such a reading may involve a departure from the strict literal
meaning of the wording of the claims.
Use Claims
A5.21 In some International Searching and Preliminary Examining Authorities, for purposes
of international search and examination, a “use” claim of the form such as “the use of
substance X as an insecticide” or “substance X when/whenever used as an insecticide” should
be regarded as equivalent to a “process” claim of the form “a process of killing insects using
substance X.” (However, it should be noted that in certain designated/elected States,
“when/whenever used” claims are considered for the purposes of the national law to be
improper process claims which lack clarity and constitute excluded subject matter.) Before
such Authorities, a claim of the form indicated should not be interpreted as directed to the
substance X recognizable (for example, by further additives) as intended for use of an
insecticide. Similarly, a claim for “the use of a transistor in an amplifying circuit” would be
equivalent to a process claim for the process of amplifying, using a circuit containing the
transistor and should not be interpreted as being directed to “an amplifying circuit in which
the transistor is used,” nor to “the process of using the transistor in building such a circuit.”
Product by Process Claims
A5.26 The International Searching and Preliminary Examining Authorities have divergent
practices with regard to the search and examination of product by process claims. Either of
the alternative guidelines below may be relied upon by an International Authority as
appropriate.
A5.26[1] Where a claim defines a product in terms of the process by which the product is
made, the claim should be construed as a claim to the product per se that possesses the
characteristics derived from the manufacturing process stated in the claim. Therefore, the
patentability of a product defined by a product-by-process claim does not depend on its
method of production. A product is not rendered novel merely by the fact that it is produced
by means of a new process. If the product in such a claim is the same as, or obvious from, a
product described in an item of prior art, the claim is unpatentable even though the product
described in the item of prior art was made by a different process.
A5.26[2] Where a claim defines a product in terms of the process by which the product is
made, the claim relates to, and would be anticipated by, only a product which has been
actually produced by the process.
Conciseness
A5.42 The International Searching and Preliminary Examining Authorities have divergent
practices with regard to whether claims, both individually and in their totality, are concise.
Either of the alternative guidelines below may be relied upon by an International Authority as
appropriate.
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A5.42[1] Claims may be objected to as lacking conciseness when they are unduly
multiplied or duplicative. Claims are unduly multiplied where, in view of the nature and
scope of the invention, an unreasonable number of claims are presented which are repetitious
and multiplied, the net result of which is to confuse rather than to clarify. The claims should
not be unduly multiplied so as to obscure the definition of the claimed invention in a maze of
confusion. However, if the claims differ from one another and there is no difficulty in
understanding the scope of protection, an objection on this basis generally should not be
applied. In addition, claims should differ from one another. If claims are presented in the
same application that are identical or else are so close in content that they both cover the same
thing, despite a slight difference in wording, an objection on the basis of conciseness may be
proper. However, such an objection should not be applied if the change in wording results
even in a small difference in scope between the two claims. Individual claims may be
objected to as lacking conciseness only when they contain such long recitations or
unimportant details that the scope of the claimed invention is rendered indefinite thereby.
A5.42[2] The number of claims must be considered in relation to the nature of the invention
the applicant seeks to protect. Undue repetition of words or a multiplicity of claims of a
trivial nature which render it unduly burdensome to determine the matter for which protection
is sought could be considered as not complying with this requirement. What is or what is not
a reasonable number of claims depends on the facts and circumstances of each particular case.
Regard also has to be had to the interests of the relevant public. The presentation of claims
should not obscure the matter for which protection is sought. Furthermore, the number of
alternatives presented within a single claim should not make it unduly burdensome to
determine the subject matter for which protection is sought.
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Chapter 6
Priority
The Right to Priority
6.01 An international application is accorded as its international filing date the date on
which it satisfies the requirements of Article 11. This date remains unchanged except in the
special circumstances of later-filed drawings and sheets as provided in Article 14(2) and
Rule 20.2. The international filing date may be the only effective date of the international
application. It will be of importance for fixing the expiration of certain time limits and for
determining the state of the art relevant for the purposes of the international search and
examination.
Article 2(xi)
6.02 However, in many cases, an international application will claim the right of priority of
the date of filing of an earlier application. In this case, it is the priority date (that is, the filing
date of the earlier application) which will be used to calculate certain time limits.
Furthermore, it is the priority date which becomes the effective date for the purposes of the
international examination, that is, the written opinion (of either the International Searching
Authority or the International Preliminary Examining Authority) and the international
preliminary examination report. Note that the relevant date for the purposes of the
international search is always the international filing date. Paragraph 11.03 defines the
“relevant date” for purposes of the international search while paragraphs 11.04 to 11.05 define
the “relevant date” for purposes of the written opinion (whether prepared by the International
Searching Authority or the International Preliminary Examining Authority) and the
international preliminary examination report. See also paragraphs 17.26 and 18.16.
Paragraph 15.01 defines “relevant prior art” for the purposes of the international search while
paragraph 11.01 provides a general definition of prior art.
Article 8(1); Rule 4.10
6.03 For a valid claim to priority, several conditions must be satisfied: the earlier
application whose priority is claimed must have been made by the applicant or his
predecessor in title; it must have been filed not more than 12 months before the filing date of
the international application; and have been “filed in or for any country party to the Paris
Convention for the Protection of Industrial Property or in or for any Member of the World
Trade Organization that is not party to that Convention.” The words “in or for” any country
or Member mean that the earlier application the priority of which is claimed may be an earlier
national, regional or international application. The earlier application may be for a patent or
for the registration of a utility model or for an inventor’s certificate. So long as the contents
of the earlier application were sufficient to establish a filing date, it can be used to create a
priority date, no matter what the final disposition of the application may later be; for
example, it may subsequently be withdrawn or held withdrawn. Other conditions to be
satisfied for a valid claim of priority are mentioned in paragraphs 6.04 and 6.11 to 6.17.
Article 8(2)(a)
6.04 Normally, the application the priority of whose filing date is claimed must be the first
application that has been filed for the invention. However, a subsequent application for the
same subject matter as the previous first application filed in or for the same State will be
considered as the first application for priority purposes if, when this subsequent application
was filed, the first application had been withdrawn, abandoned or refused, without being open
to public inspection and without leaving any rights outstanding, and had not served as a basis
for claiming priority. The examiner will not normally consider this question unless there is
clear evidence of the existence of an earlier application as, for example, in the case of a
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United States continuation application. Where it is clear that an earlier application for the
same subject matter exists, and where the priority right is important because of intervening
prior art (see paragraph 6.06), the applicant should be invited to satisfy the examiner that there
were no rights outstanding in the earlier application in respect of the subject matter of the
application being examined.
Article 8(1)
6.05 An international application may claim rights of priority based on more than one
earlier application (“multiple priorities”), even if they originate in different countries. The
earliest application must have been filed not more than 12 months before the date of filing of
the international application. An element of an international application will be accorded the
priority date of the earliest priority application which discloses it. If, for instance, the
international application describes and claims two embodiments (A and B) of an invention, A
being disclosed in a French application and B in a German application, both filed within the
preceding 12 months, the priority dates of both the French and German applications may be
claimed for the appropriate parts of the international application; embodiment A will have the
French priority date and embodiment B the German priority date. If an international
application is based on one earlier application disclosing a feature C and a second earlier
application disclosing a feature D, neither disclosing the combination of C and D, a claim to
that combination will be entitled only to the date of filing of the international application
itself. In other words, it is not permitted to make a mosaic of the priority documents. An
exception might arise where one priority document contains a reference to the other and
explicitly states that features from the two documents may be combined in a particular
manner.
Determining Priority Dates
6.06 As a general rule, the examiner, in preparing a written opinion or an international
preliminary examination report, should not make any investigation as to the validity of a right
to priority. However, the priority right assumes importance if subject matter relevant with
regard to the determination of novelty or inventive step (non-obviousness) of the claimed
invention:
(i) has been published within the meaning of Rule 64.1 on or after the priority date
claimed and before the international filing date;
(ii) forms part of the content of a non-written disclosure within the meaning of
Rule 64.2, that is, a non-written disclosure which occurred before the priority date and which
was indicated in a written disclosure in the period between, and including, the priority date
and the international filing date; or
(iii) forms part of the content of an application or patent within the meaning of
Rule 64.3, that is, an application or patent which was published on or after that date but was
filed earlier than the international filing date or claimed the priority of an earlier application
which was filed prior to the international filing date.
In such cases (that is, cases where the art in question would be relevant if of earlier date), the
examiner must satisfy himself that the priority date(s) claimed may be accorded to the
appropriate parts of the international application he is examining and, where appropriate, will
also consider the validity of any priority date claimed for the application or patent within the
meaning of Rule 64.3 (see also Rule 70.10, last sentence).
6.07 When the examiner needs to consider the question of priority date, he should bear in
mind all the matters which are mentioned in paragraphs 6.03 to 6.05. He should also
remember that, to establish a priority date, it is not necessary that all of the elements of the
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invention for which priority is claimed should be found among the claims in the previous
application. It is sufficient that the documents of the previous application taken as a whole
specifically disclose such elements. The description and any claims or drawings of the
previous application should, therefore, be considered as a whole in deciding this question,
except that account should not be taken of subject matter found solely in that part of the
description referring to prior art, or in an explicit disclaimer.
6.08 The requirement that the disclosure must be specific means that it is not sufficient if
the elements in question are merely implied or referred to in broad and general terms. A
claim to a detailed embodiment of a certain feature would not be entitled to priority on the
basis of a mere general reference to that feature in a priority document. Exact correspondence
is not required, however. It is enough that, on a reasonable assessment, there is in substance a
disclosure of the combination of all the important elements of the claim.
6.09 The basic test to determine whether a claim is entitled to the date of a priority
document is the same as the test of whether an amendment to an application satisfies the
requirement of Article 34(2)(b). That is to say, for the priority date to be allowed, the subject
matter of the claim must be explicitly or inherently disclosed in the priority document,
including any features implicit to a person skilled in the art. As an example of an implicit
disclosure, a claim to apparatus including “releasable fastening means” would be entitled to
the priority date of a disclosure of that apparatus in which the relevant fastening element was,
say, a nut and bolt, or a spring catch or a toggle-operated latch, provided the general concept
of “releasable fastening” is implicit in the disclosure of such element.
6.10 If the tests set out in paragraphs 6.07 to 6.09 are not satisfied in relation to a particular
earlier application, then the relevant date of the claim will either be the priority date of the
earliest application which satisfies the tests and does provide the required disclosure or, in the
absence of such, will be the international filing date of the international application itself.
Claiming Priority
Article 11; Rule 4.10
6.11 An applicant who wishes to claim priority must state this on the request
(Form PCT/RO/101) giving particulars of the previous filing, as specified in Rule 4.10 (see
paragraph 6.13), although later correction of priority claims, including the addition or deletion
of entire priority claims, is permitted under Rule 26bis within the time limits discussed in
paragraph 6.16.
Rule 17.1
6.12 When making a claim to priority, the applicant must, in addition to giving the
particulars of the previous filing, either:
(a) submit the priority document to the International Bureau or to the receiving Office
within 16 months of the priority date, unless it was already filed with the receiving Office
together with the international application; or
(b) request the International Bureau or the receiving Office to obtain the priority
document from a digital library within 16 months of the priority date where the priority
document is available from the digital library in accordance with the Administrative
Instructions.
Any priority document submitted by the applicant which is received by the International
Bureau after the expiration of that 16-month time limit will nevertheless be considered to
have been received by that Bureau on the last day of the 16-month time limit if it is received
before the date of international publication of the international application. Where the priority
document is issued by the receiving Office the applicant may, instead of submitting the
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priority document, request the receiving Office to transmit the priority document to the
International Bureau, in which case the time limit for furnishing the priority document has
been complied with if the applicant makes the request before the expiration of the 16-month
time limit irrespective of when the priority document reaches the International Bureau.
6.13 The examiner should keep in mind that the form of the declaration (see
paragraph 6.11) claiming the priority of one or more earlier applications under Article 8(1) is
prescribed under Rule 4.10(a). The prescribed form of declaration includes the giving of the
following indications:
(i) the date on which the earlier application was filed, being a date falling within the
period of 12 months preceding the international filing date;
(ii)
the number of the earlier application;
(iii) where the earlier application is a national application, the country party to the
Paris Convention for the Protection of Industrial Property or the Member of the World Trade
Organization that is not party to that Convention in which it was filed;
(iv) where the earlier application is a regional application, the authority entrusted with
the granting of regional patents under the applicable regional patent treaty;
(v) where the earlier application is an international application, the receiving Office
with which it was filed.
6.14 Where the earlier application is a regional application or an international application,
the applicant may also indicate in the priority claim one or more countries party to the Paris
Convention for the Protection of Industrial Property for which that earlier application was
filed.
6.15 Where the earlier application is a regional application and at least one of the countries
party to the regional patent treaty is neither party to the Paris Convention for the Protection of
Industrial Property nor a Member of the World Trade Organization, the priority claim must
indicate at least one country party to that Convention or one Member of that Organization for
which that earlier application was filed.
Rule 26bis
6.16 It is clear from the provisions of Rule 26bis that the indications concerning a priority
claim, if not made in the request (Form PCT/RO/101), must be furnished by the applicant to
the International Bureau or to the receiving Office within 16 months of the priority date or,
where correction or addition of a priority claim would cause a change in the priority date,
16 months from the priority date as so changed, whichever 16-month period expires first,
provided that a notice correcting or adding a priority claim may, in any case, be submitted
until the expiration of four months from the international filing date. The correction of a
priority claim may include the correction or addition of any indication referred to in
Rule 4.10.
Rules 66.7(a) and (b), 17.1(c) and (d)
6.17 If the examiner needs a copy of the priority document (see paragraph 6.06), the copy
is supplied on request by the International Bureau, unless the International Bureau has not yet
received the priority document (see paragraph 6.12), in which event the examiner may invite
the applicant himself to furnish such a copy. If the priority document is not in the language,
or one of the languages (if more than one) of the relevant Authority, the examiner may invite
the applicant to furnish a translation of the priority document within two months of the
invitation. In the meantime, any written opinion established while there is still time to furnish
the priority document or translation thereof may proceed as if the priority had been validly
claimed (see also paragraphs 11.05, 17.26 and 18.16); however, if the necessary priority
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document or its translation is not timely furnished, any further written opinion or the
international preliminary examination report may be established as if the priority had not been
claimed. No designated Office may disregard the priority claim before giving the applicant an
opportunity to furnish the priority document within a time limit which is reasonable under the
circumstances. Furthermore, no designated Office may disregard the priority claim if the
priority document is available to it from a digital library in accordance with the
Administrative Instructions.
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Chapter 7
Classification of International Applications
Definition
Rule 43.3
7.01 Classification involves the assigning of one or more classification symbols to a
particular international application, whereby the technical subject of the invention of that
application is identified. Every international application must be classified by the
International Searching Authority according to the International Patent Classification system
(IPC), and this chapter deals only with such classification.
Definitive Classification of the International Application
7.02 The classification of the international application is determined by the International
Searching Authority. Classification symbols are applied to each application according to the
current rules of the IPC. The IPC Guide can be accessed through the World Intellectual
Property Organization web site at www.wipo.int.
Multiple Classifications
7.03 If the international application requires more than one classification symbol, then all
such classifications are assigned in accordance with the IPC Guide.
Classification of Disclosure as Filed
7.04 The classification is determined without taking into consideration the probable content
of the international application after any amendment, since this classification should relate to
the disclosure in the published international application, that is, the application as filed. If,
however, the examiner’s understanding of the invention, or of the content of the application
as filed, alters significantly as a result of the search (for example, as a result of prior art found,
or because of the clarification of apparent obscurities), the classification should be amended
accordingly.
Amended Classification in the Case of Later Published International Search Report
7.05 In case the international search report is not available in time for publication with the
international application, and therefore is published separately, and the examiner finds it
necessary to amend the original classification for the reasons given in paragraph 7.04, he
includes the amended classification in the international search report, indicating, by adding
the word “amended,” that it replaces the one published on the international application. Such
amendment of the classification should not be made unless the examiner is quite certain that it
is necessary.
Classification When Scope Is Obscure
7.06 When the scope of the invention is not clear, the classification has to be based on what
appears to be the invention insofar as this can be understood. It may be necessary to amend
the classification, at a later stage, if obscurities are removed by the search, as discussed in
paragraph 7.04.
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Lack of Unity of Invention
7.07 All claimed inventions must be fully classified, whether or not there is lack of unity of
invention, since all are disclosed in the published international application. Each invention
claimed is classified as set out in paragraphs 7.02 to 7.06.
Classification of International Applications Excluded from International Search
7.08 If the International Searching Authority finds that the international application relates
to a subject matter which it is not required to search or that a meaningful search cannot be
carried out (see chapter 9), the classification is nevertheless made, to the extent possible, and
communicated to the International Bureau for the purposes of publication of the international
application.
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Chapter 8
Rule 91 – Obvious Errors in Documents
Rule 91.1(a) and (b)
8.01 Errors which are due to the fact that something other than that which was obviously
intended that were written in the contents of the international application or in a later
submitted paper (for example, linguistic errors, spelling errors) may usually be rectified. The
error must be “obvious” in the sense that it is immediately apparent:
(i)
that an error has occurred; and
(ii) that anyone would immediately recognize that nothing else could have been
intended other than the offered rectification.
8.02 Examples of obvious errors that are rectifiable include linguistic errors, spelling errors
and grammatical errors so long as the meaning of the disclosure does not change upon entry
of the rectification. Errors in chemical or mathematical formulae would not generally be
rectifiable unless the correct formulae would be common knowledge to anyone.
Rule 91.1(c)
8.03 If a correction is not of this character (for example, if it involves cancellation of
claims, omission of passages in the description or omission of certain drawings), it would be
treated by the Authority as an amendment and dealt with on that basis.
Transmittal to Another Authority of a Request for Rectification
Rule 91.1(e)
8.04 The following authorities are competent to authorize rectifications in the international
application and associated papers:
(i)
the receiving Office if the error is in the request,
(ii) the International Searching Authority if the error is in any part of the international
application other than the request or in any paper submitted to that Authority,
(iii) the International Preliminary Examining Authority if the error is in any part of the
international application other than the request or in any paper submitted to that Authority,
(iv) the International Bureau if the error is in any paper, other than the international
application or amendments or corrections to that application, submitted to the International
Bureau.
8.05 If an International Authority receives a request for rectification of an obvious error in
the request or a paper for which it is not the authority competent to authorize the rectification,
it transmits that request together with any proposed replacement sheet to the appropriate
authority, as listed above, and informs the applicant accordingly. It may, instead of
transmitting the request, inform the applicant that the request should be sent to the authority
competent to rectify the error. For the language(s) in which such request for rectification
must be submitted, see Rule 12.2(b).
Invitation to the Applicant to Request Rectification
8.06 If the International Searching Authority discovers what appears to be an obvious error
in the international application or any other paper submitted by the applicant, it may invite
(optionally using Form PCT/ISA/216) the applicant to submit a request for rectification to the
Authority competent to authorize the rectification (Rule 91.1(d) and (e)). Although
Rule 91.1(d) allows the International Searching Authority to invite rectifications, it is not
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expected that such invitations will be issued since any error which can be rectified under
Rule 91 will not be an impediment to establishing the search report.
Request for Rectification Submitted to the International Searching Authority
Rule 91.1; Section 511
8.07 Where rectification in respect of any document other than the request Form is sought,
the International Searching Authority considers whether the error is rectifiable under
Rule 91.1, and completes Form PCT/ISA/217. The International Searching Authority
forwards the request for rectification and the PCT/ISA/217 to the receiving Office, the
International Bureau and the applicant.
Rule 91.1(b), (g)(i), (g-bis), (g-ter) and (g-quater)
8.08 Authorization of rectifications is determined solely by Rule 91.1(b) and (c) (see
paragraphs 8.01 to 8.03) while Rule 91.1(g)(i), (g-bis), (g-ter) and (g-quater), determines if
they are of effect (in general, where the notification of the authorization for rectification
reaches the International Bureau before the completion of the technical preparations for
international publication). Whether such rectifications can be effective is not a consideration
in authorizing and thus of no concern to the search examiner. No authorization will be
approved once publication has occurred.
Request for Rectification Submitted to the International Preliminary Examining
Authority
Rules 66.5, 91.1(b)
8.09 Subject to authorization (see paragraph 8.10), rectification of obvious errors in the
international application can be made at the request of the applicant of his own volition. In
addition, the examiner, upon study of the international application (other than the request) and
any other papers submitted by the applicant, might also note obvious errors. Although
Rule 91 allows the International Preliminary Examining Authority to invite applicants to
submit a request for rectification (optionally using Form PCT/IPEA/411), it is not foreseen
that such invitations will be issued since any error which can be rectified under Rule 91 will
not be an impediment to establishing the international preliminary examination report.
Rule 91.1(e), (f) and (g)(ii); Section 607
8.10 Rectification of an obvious error cannot be made before the International Preliminary
Examining Authority without the express authorization of that Authority. The Authority is
permitted to authorize rectification of such errors in a part of the international application
other than the request or in any papers submitted to it. The examiner may only authorize
rectification of obvious errors up to the time the international preliminary examination report
is established. The time within which requests for rectification can be made to that Authority
is limited accordingly. Any Authority which authorizes or refuses any rectification promptly
notifies the applicant of the authorization or refusal using Form PCT/IPEA/412 and, in the
case of refusal, of the reasons therefor. The International Preliminary Examining Authority
sends a copy of the request for rectification and the Form PCT/IPEA/412 to the International
Bureau.